Alison J. Baldwin

Partner
P: 312.935.2369
F: 312.913.0002

Alison J. Baldwin is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's PTAB Trials Practice Group. Ms. Baldwin has over a decade of experience in handling complex patent litigation matters. This litigation experience includes both jury and bench trials in federal district court, as well as advocacy in forums such as the Patent Trials and Appeals Board, the International Trade Commission and private arbitration proceedings. Ms. Baldwin’s litigation experience spans a diverse range of technologies, with a concentration in pharmaceuticals, medical devices and biotechnology. She is particularly well versed in the specific needs of pharmaceutical innovator clients in paragraph IV litigations.

Ms. Baldwin’s litigation experience crosses over into many other strategy applications for the firm’s clients, such as opinion work, freedom-to-operate analysis and patent portfolio analysis. While she has counseled clients in a variety of technology areas, her background in biotechnology and plant science allows her to have a personal understanding of the unique needs and challenges faced by the firm’s pharmaceutical, agricultural and biofuel clients.

Ms. Baldwin served for two years as a member of the firm’s Management Board. She was chairperson of the firm’s Business Development Committee and the firm’s Recruiting Committee. She is co-founder and immediate past co-chair of the MBHB Women’s Group (PINK).

 
What a client has to say about Ms. Baldwin:

“She’s very good technically and legally and a very good lawyer who presents herself well and represents the client very well.”

Representative Experience

Ms. Baldwin's representative experience includes:

  • Representing several innovator pharmaceutical corporations in ANDA litigations through trial, leading to favorable settlements.
  • Representing Complainant in Section 337 investigation before the International Trade Commission regarding circuit board components that successfully resulted in every named defendant converting to a non-infringing product.
  • Successfully defending companies, including a Fortune 500 pharmaceutical company, in Section 337 investigations before the International Trade Commission which have each resulted in forcing the Complainants to withdraw their complaint and terminate the investigation.
  • Defending Fortune 500 innovator pharmaceutical corporation at jury trial on patent infringement claims, with successful invalidation of asserted patent obtained on appeal.
  • Successfully obtaining summary judgment of no patent infringement in multiple patent cases involving technologies ranging from consumer products to electronic devices.
  • Successfully representing clients in arbitration process, including coordinating an international arbitration for a Fortune 500 pharmaceutical company in a patent license dispute, leading to a multimillion dollar award for the client.
  • Assisting clients in the plant science and biofuel industries in developing strategies for protecting their technology, including protection via the patent system, trademark system and the plant variety protection act.
  • Authoring dozens of opinions regarding issues of patent infringement, validity, and enforceability.

Memberships

IIT Chicago-Kent College of Law
  • Adjunct Professor, Intensive Intellectual Property Trial Advocacy
  • Adjunct Professor, IP Strategies

River North Dance Chicago
  • Board Member

Federal Circuit Bar Association

American Bar Association

PTAB Bar Association
  • Vice-Chair, Membership/Sponsorship Committee

Distinctions

Illinois Super Lawyers Rising Star

Past Events

September 19, 2017
MBHB Partners Alison Baldwin and Paula Fritsch, Ph.D. Are Featured Presenters
September 20, 2016
MBHB Partners Alison Baldwin and Paula Fritsch, Ph.D. Are the Featured Presenters
November 20, 2014
MBHB Partners Alison Baldwin and Rory Shea Are the Featured Presenters
November 19, 2013
MBHB Attorneys Alison Baldwin and Sarah Fendrick, Ph.D. Are the Featured Presenters
July 30, 2013
MBHB Attorneys Alison Baldwin and Sarah Duda Are the Featured Presenters

Publications

Fall 2016 (snippets)
September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board created by the America Invents Act (AIA). These new AIA proceedings, particularly covered business method reviews and inter partes reviews, had an almost immediate impact on litigation defense strategies in the financial services and technology fields. The impact in the bio/pharma field was slower at the beginning, but the number of AIA petitions for review of bio/pharma patents has steadily increased over the past four years.
Fall 2014 (snippets)
When Congress created the Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) review procedures for challenging the validity of an issued patent, it was intended for these processes to be quicker and more cost-effective than challenging patent validity in the district court system. One of the mechanisms Congress utilized for achieving these objectives was limiting the types of discovery allowed as part of the IPR and CBM processes. This was a lofty goal and pundits questioned whether this restricted scope of discovery could be maintained in practice. With the passage of two years under the IPR and CBM systems, a noticeable trend has emerged regarding how the Patent Trial and Appeal Board is accomplishing these Congressional objectives through its decisions on motions for additional discovery.
Fall 2013 (snippets)
On September 16, 2012, Inter Partes Review (IPR) replaced Inter Partes Reexamination (IPX) as an avenue for third party patentability challenges in the United States Patent and Trademark Office (PTO). Arising from the 2011 Leahy-Smith America Invents Act (AIA), this change has transformed inter partes challenges “from an examinational to an adjudicative proceeding.” In other words, the old “prosecution-like” IPX practice has given way to a streamlined “mini-trial” IPR process that could provide cost and time benefits to challengers and patentees alike. As IPR just passes its one year anniversary, this article aims to compare IPR with the old IPX process, provide an update of the most recent case law, and offer relevant IPR practice tips.
May 20, 2013 (snippets Alert)

On May 20, 2013, new rules of practice and procedure go into effect for International Trade Commission Section 337 Investigations, 19 C.F.R. Parts 201 and 210. Many of these rule changes were made for the purposes of making technical corrections or clarifications to the rules and will have little direct impact upon a complainant or respondent’s strategy in navigating through a Section 337 Investigation. However, some of the changes to the rules, particularly those changes to the rules governing the initiation of an Investigation (§210.12), the termination of an Investigation (§210.21), and the scope of discovery (§210.18), are worthy of attention.

Winter 2013 (snippets)
On January 10, 2013, the Federal Circuit in InterDigital Communications v. ITC denied a combined petition for panel rehearing and for rehearing en banc, holding that InterDigital’s patent licensing alone met the domestic industry requirement of § 337 of the Tariff Act of 1930, 19 U.S.C. §§ 1337(a)(2) and 1337 (a)(3). On its face, this decision seems to open the floodgates for non-practicing entities (NPEs) to file lawsuits in the International Trade Commission (ITC). However, a close reading of the Court’s opinion and the legislative history of §337 indicates that this is not the case.
December 12, 2011 (snippets Alert)
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